HP INDIGO B.V.

Patent Trials and Appeals Board

Mar 15, 2022

2021002885 (P.T.A.B. Mar. 15, 2022)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 15/569,252 10/25/2017 Avishai Moshel 84686238 1344 22879 7590 03/15/2022 HP Inc. 3390 E. Harmony Road Mail Stop 35 Fort Collins, CO 80528-9544 EXAMINER UNDERWOOD, JARREAS C ART UNIT PAPER NUMBER 2877 NOTIFICATION DATE DELIVERY MODE 03/15/2022 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): ipa.mail@hp.com jessica.pazdan@hp.com yvonne.bailey@hp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte AVISHAI MOSHEL Appeal 2021-002885 Application 15/569,252 Technology Center 2800 Before CATHERINE Q. TIMM, GEORGE C. BEST, and SHELDON M. MCGEE, Administrative Patent Judges. TIMM, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as HP Indigo B.V. Appeal Br. 3. Appeal 2021-002885 Application 15/569,252 2 CLAIMED SUBJECT MATTER The claims are directed to a printing apparatus that includes circuitry that calculates the thickness of one of two printed layers (see, e.g., claims 1 and 7) and an associated method (see, e.g., claim 11). Claim 1 is illustrative of the claimed apparatus, and claim 11 is illustrative of the claimed method. Claims 1 and 11 are reproduced below: 1. A system comprising: a printer to deposit a first layer of a first printing fluid and a second layer of a second printing fluid on a substrate, the first and second layers provided one above the other in a region of the substrate; and processing circuitry to: receive data indicative of a measurement of an optical parameter of the region of the substrate having the first layer and the second layer, receive data indicative of a reference measurement indicative of the optical parameter of the first layer in the absence of the second layer, determine a difference between the measurement of the optical parameter of the region of the substrate and the reference measurement indicative of the optical parameter, calculate a thickness of the second layer based on the determined difference. Appeal Br. 19 (Claims Appendix). 11. A method comprising: depositing, with a printer, a first layer of a first printing fluid and a second layer of a second printing fluid on a substrate, including applying the second layer over or below the first layer in a region of the substrate; measuring an optical parameter of the region of the substrate having the second layer over or below the first layer; Appeal 2021-002885 Application 15/569,252 3 determining a change in the optical parameter of the first layer due to the second layer applied over or below the first layer with respect to the substrate, including comparing the measurement of the optical parameter of the region of the substrate having the second layer over or below the first layer with a reference measurement of the optical parameter of the first layer in the absence of the second layer; calculating a thickness of the second layer based on the change in the optical parameter. Appeal Br. 21 (Claims Appendix). REJECTIONS 1. Claims 1, 2, 4-13, and 15 are rejected under 35 U.S.C. § 103 as being unpatentable over Umebayashi (US 9,211,725 B2, issued Dec. 15, 2015) in view of Pfeiffer (US 5,122,977, issued Jun. 16, 1992) in view of Finarov (US 7,019,850 B2, issued Mar. 28, 2006). 2. Claims 3 and 14 are rejected under 35 U.S.C. § 103 as being unpatentable over Umebayashi in view of Pfeiffer and Finarov, and further in view of Hersch (US 2008/0055355 A1, published Mar. 6, 2008). 3. Claims 16 and 18 are rejected under 35 U.S.C. § 103 as being unpatentable over Umebayashi in view of Pfeiffer and Finarov, and further in view of Uejima (US 2004/0189774 A1, published Sep. 30, 2004). 4. Claims 17, 19, and 20 are rejected under 35 U.S.C. § 103 as being unpatentable over Umebayashi in view of Pfeiffer and Finarov, and further in view of Hobbensiefken (US 2009/0181217 A1, published Jul. 16, 2009). Appeal 2021-002885 Application 15/569,252 4 OPINION Appellant has identified a reversible error in the Examiner’s finding of a reason to modify Umebayashi’s printer and printing process with Finarov’s layer thickness calculating technique. Umebayashi teaches using an inkjet printer to deposit transparent ink droplets over or under pigment ink droplets to form an image on a substrate. Umebayashi col. 7, ll. 41-64; Fig. 1. Finarov is directed to calculating layer thickness in a multilayer semiconductor wafer. Finarov col. 3, ll. 30-46; col. 5, ll. 42-65; Figs. 1, 4. Finarov optically measures areas along a sloped sidewall (measurement slope 26) of the semiconductor wafer. Finarov col. 3, ll. 35-49; Fig. 3; see also Finarov col. 5, ll. 30-65; Fig. 4. Finarov forms the slope by removing wafer wall material by, for instance, polishing. Finarov col. 7, ll. 1-32. Appellant points out that removing material to create a sloped sidewall as taught by Finarov would defeat the purpose of the printed layers of Umebayashi’s printed image. Appeal Br. 11-12. The Examiner responds that Finarov’s Figure 4 method “could be applied to the layers shown in Umebayashi Figures 1 and 5” without any further explanation. Ans. 5. We agree with Appellant that the Examiner’s reasoning falls short. It is not clear how the ordinary artisan would apply Finarov’s measurement process, which requires a sloped sidewall, to the inkjet image of Umebayashi. Given that the Examiner has not pointed out any teaching within Umebayashi suggesting Umebayashi’s ink layers have the necessary slope or how the ordinary artisan would create the necessary slope, we determine a preponderance of the evidence fails to support the Examiner’s finding of a suggestion within the prior art for modifying Umebayashi’s apparatus with the circuitry required by claims 1 and 7 or modifying Appeal 2021-002885 Application 15/569,252 5 Umebayashi’s method to perform the determining and calculating steps of claim 11. None of the other references relied on by the Examiner remedy the deficiency. Thus, we do not sustain any of the rejections applied by the Examiner. CONCLUSION The Examiner’s decision to reject claims 1-20 is reversed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 4-13, 15 103 Umebayashi Pfeiffer, Finarov 1, 2, 4-13, 15 3, 14 103 Umebayashi Pfeiffer, Finarov, Hersch 3, 14 16, 18 103 Umebayashi Pfeiffer, Finarov, Uejima 16, 18 17, 19, 20 103 Umebayashi Pfeiffer, Finarov, Hobbensiefken 17, 19, 20 Overall Outcome 1-20 REVERSED